MEMORANDUM ORDER AND OPINION
JAMES F. HOLDERMAN, District Judge.
In these three consolidated cases, patent holder CIVIX-DDI, LLC ("CIVIX") alleges infringement by CoStar Realty Information, Inc. ("CoStar") and LoopNet, Inc. ("LoopNet") (collectively "CoStar/LoopNet"). In 12 C 4968, CIVIX alleges that CoStar has infringed three of its patents, U.S. Patent No. 6, 385, 622 ("the 622 Patent"), U.S. Patent No. 6, 415, 291 ("the 291 Patent"), and U.S. Patent No. 8, 296, 335 ("the '335 Patent"). (Dkt. No. 108.) Similarly, in 12 C 8632, CIVIX alleges that LoopNet infringed the 335 Patent (12 C 8632, Dkt. No. 1), and in 12 C 7091 CIVIX alleges that LoopNet infringed the 622 and 291 Patents (12 C 7091, Dkt. No. 1).
The parties stipulated the construction of six claim terms in the patents-in-suit, as follows:
"associated category" means "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups";
"geographic vicinity" means "a geographic region that includes and surrounds selected items of interest";
"hierarchically displaying" means "displaying geographical information in levels of abstraction";
"port" means "a terminal, for example, a personal computer with modem, from which a user of the invention can access the database storing the information about items of interest";
"request signal representative of a selected category and geographic vicinity" means "a single electronic representation of a user's selection of at least one category and at least one geographic vicinity"; and
"video" means "a presentation of multiple sequential frames of image data"-"video" cannot entail a single digital picture.
(Dkt. No. 157.) The parties then presented claim construction briefs regarding ten other disputed claim terms. (Dkt. Nos. 159, 169, 173.) The parties' counsel presented oral argument to the court on September 20, 2013. The court construes each of the disputed terms as stated below.
CIVIX owns the 622 and 291 Patents, both of which were applied for in 2001 and issued in 2002. (Dkt. No. 99, Exs. A & B.) They each claim methods to locate points of interest in a particular geographical region by accessing a database from a remote location. CIVIX also owns the 335 Patent, which was applied for in 2002 and issued in 2012. (Dkt. No. 99, Ex. F.) The 335 Patent claims methods for using the Internet to provide a user of such a database advertising information related to the requested geographic region or item of interest. Each of the three patents-in-suit shares the same patent family tree, and all derive from Application No. 08/371, 425, which was filed January 11, 1995. (Dkt. No. 159, Ex. A.) The patents all share essentially the same written description. Accordingly, for ease of reference, the court's citations to the patents' written description refer to the first issued patent, the 622 Patent, unless otherwise indicated.
In general, the patents claim a number of systems and methods that allow a user to access information about "items of interest" in a particular geographic vicinity from a remote location. 622 Patent 1:45-57. For example, a user at a port, such as a computer linked to the Internet, could identify a geographic vicinity, such as "Logan Square" or "Chicago, " and a category, such as restaurants, historical sites, or antique stores. Id. 2:10-32. After communicating the user's selections to a remote database, the database generates a response to the user indicating the location of the items of interest in the category and vicinity that the user has selected. Id. The response is then communicated to the user's port for the user to view. Id. In addition to the location, the database can also supply additional information about the items of interest, including potentially paid advertisements about the items of interest. Id. 2:54-3:2. Claim 1 of the 622 Patent, though not asserted in these cases, is representative and claims the following:
System for remotely determining the position of a selected category of items of interest in a selected geographic vicinity from a database, the system comprising:
(A) a database for storing information about a plurality of items of interest, the information including, for each of the items of interest, a geographical position and at least one association category,
(B) a communications link for communicating between a user of the system and the database,
(C) an information controller for transmitting a portion of the information in the database to the user via the link upon receipt of a request signal representative of a selected category and geographic vicinity, the transmitted portion of the information including identification of geographic position for at least one of the items of interest within the selected category and geographic vicinity, and
(D) a port for remotely accessing the portion of information via the link, the port generating the request signal in response to inputs by the user which are representative of the selected category and geographic vicinity, the port having a user interface for accepting the inputs and for indicating to the user the position [of] at least one of the items of interest in the selected category and geographic vicinity.
Each of the claims asserted in this case also requires the communications link to be the Internet or that the database and the user port be connected at least in part through the Internet. See 622 Patent cls. 20, 26; 291 Patent cls. 8, 16, 17, 22, & 23; 335 Patent cls. 1, 2, 6, 8-13, & 17-24.
Various patents in the patent family of the patents-in-suit have been construed previously by judges both in this district and in other districts. Claim terms of one parent patent were construed more than a decade ago in CIVIX-DDI, LLC v. Microsoft Corp., 84 F.Supp.2d 1132, 1136 (D. Colo. 2000) (Babcock, J.), aff'd, 18 F.Appx. 892 (Fed. Cir. 2001) (the " Microsoft Litigation"). Claim terms of the 622 Patent, the 291 Patent, and another parent patent were construed by Judge St. Eve of this district court more than half a decade ago in two cases: CIVIX-DDI, LLC v. Cellco P'ship d/b/a Verizon Wireless, No. 03 C 3792 (N.D. Ill. Apr. 6, 2005) (the " Expedia Litigation") and CIVIX-DDI, LLC v. Hotels.com, L.P., No. 05 C 6869 (N.D. Ill. May 11, 2007) (the " Hotels.com Litigation").
Claim construction is a legal determination. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). "It is a bedrock principle' of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). When construing a patent's claims, the court, whether at the trial or appellate level, must give disputed claim terms their "ordinary and customary meaning, " which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13. The effective filing date of all of the patents-in-suit is January 11, 1995, the filing date of the initial application of which each of applications leading to the patents-in-suit is a continuation. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008).
To determine the ordinary and customary meaning of a claim term, the court should examine first the entire intrinsic evidence, including the claims, the specification, and the prosecution history. Id. at 1313-17. Usually, the specification "is dispositive" because "it is the single best guide to the meaning of a disputed term." Id. at 1315 (quotation marks and citation omitted). Nonetheless, the court must not import a limitation from the specification into the claim, because "[g]enerally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention' to limit the claim's scope with words or expressions of manifest exclusion or restriction.'" i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 843 (Fed. Cir. 2010) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
The prosecution history also "provides evidence of how the PTO [U.S. Patent and Trademark Office] and the inventor understood the patent" and "can often inform the meaning of the claim language by demonstrating... whether the inventor limited the invention in the course of prosecution." Phillips, 415 F.3d at 1317. Nevertheless, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id.
Finally, if the intrinsic evidence does not resolve the issue of the proper claim construction, the court may consider extrinsic evidence such as "expert and inventor testimony, dictionaries, and learned treatises" in construing a patent's claims. Id. (quotation marks and citation omitted). Such extrinsic evidence "can shed useful light on the relevant art" but is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. (quotation marks and citations omitted).
As an initial matter, the parties dispute the effect that the court should give to the prior claim construction orders of the courts in the Microsoft Litigation, the Expedia Litigation, and the Hotels.com Litigation. Because CoStar/LoopNet were not parties to any of the prior litigation, the parties agree that the constructions in those cases do not have preclusive effect. See Markman, 517 U.S. at 391 ("[I]ssue preclusion could not be asserted against new and independent infringement defendants even within a given jurisdiction...."). CIVIX contends, however, that this court should defer to the prior claim construction rulings unless they are "clearly erroneous" or incorrect as a matter of law. See DE Techs., Inc. v. IShopUSA, Inc., 826 F.Supp.2d 937, 940-41 (W.D. Va. 2011); see also Sears Petroleum & Transp. Corp. v. Archer Daniels Midland Co., No. 03-CV-1120, 2007 WL 2156251, at *8 (N.D.N.Y. July 24, 2007) (granting "considerable deference" to a prior decision even when the parties raised new arguments that were not considered by the previous judge). By contrast, CoStar/LoopNet argue that, although prior decisions are instructive, the court must perform an independent evaluation of each disputed claim term. According to CoStar/LoopNet, prior constructions are particularly unhelpful where the parties in this case raise additional arguments that were not previously addressed.
The Supreme Court in Markman established that uniformity is an important consideration in claim construction, because "the limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public." Markman, 517 U.S. at 390 (citation, quotation marks, and alteration omitted). The Supreme Court then noted that as a legal determination, a claim construction ruling should "promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court." Id. at 391. That pronouncement does not resolve the issue of the precedential value of claim construction in the district court, of course. District court opinions are not binding authority even in the district in which they are rendered, as the Supreme Court acknowledged by stating that making claim construction a matter of law "will not guarantee" consistency even within a particular district court. Id.
As a result, "there is an ongoing debate as to the preclusive effects of a Markman ruling" in the district court. DE Techs., 826 F.Supp.2d at 940 (citation and quotation marks omitted). Moreover,
[w]ith little guidance from the Federal Circuit on the issue, district courts have split on whether a Markman claim construction ruling has preclusive effects in subsequent litigation involving the same patent, especially where the prior litigation settled before a final judgment was entered, the ruling has otherwise yet to be applied in a final judgment regarding infringement or validity, or where the ruling has not undergone Federal Circuit review.
Id. (citation and quotation marks omitted). Courts in this district have stopped short of affording complete deference to prior non-preclusive district court claim constructions, instead giving them the status of only persuasive authority. See Nilssen v. Motorola, Inc., 80 F.Supp.2d 921, 924 n.4 (N.D. Ill. 2000) (Shadur, J.) (giving respect to prior decisions but noting that court "is not compelled to reach the same conclusions"); see also Kim v. The Earthgrains Co., No. 01 C 3895, 2005 WL 66071, at *11 (N.D. Ill. Jan. 11, 2005) (Mason, M.J.) ("While stopping short of according a preclusive effect to Judge Hart's claim construction, the court will bear his interpretations in mind as instructive while rendering its own construction of the claims at issue here."); Jackson v. Vtech Telecomms. Ltd., No. 01 C 8001, 2003 WL 25815373, at *3 (N.D. Ill. Oct. 23, 2003) (Castillo, J.) (court will "consult, adopt and refer to these prior opinions when we find it persuasive, reasonable, economical or otherwise appropriate to do so"). Indeed, Judge St. Eve. came to a similar conclusion in the Hotels.com Litigation involving CIVIX about the prior Expedia Litigation. Hotels.Com, 2010 WL 4386475, at *3 ("In considering the proper construction of associated category, ' the Court places little weight on that earlier agreement because Defendants in the present case were neither parties in Expedia nor were they in privity with those parties."). Accordingly, this court will treat the prior claim construction opinions in the Microsoft, Expedia, and Hotels.com Litigations as persuasive authority and provide them the deference provided any legal holding by a respected colleague. With that principle in mind, this court will undertake its own review of the pertinent information related to each of the disputed claim terms.
A. "[T]he request containing (a) at least one user-selected category and (b) a user-selected geographic vicinity"
The parties propose the following constructions:
Patents/Claims CoStar/LoopNet's Proposed CIVIX's Proposed Construction Construction 335 Patent, A single electronic representation of at One or more electronic all claims least one user-selected category and a representations of at least one user-selected geographic vicinity. user-selected category and a user-selected geographic vicinity.
The disputed terms appear in the context of claim 1 of the 335 Patent, which recites "at a database, receiving at least in part through the internet, a request from one of a plurality of ports remotely located from the database, the request containing (a) at least one user-selected category and (b) a user-selected geographic vicinity." 335 Patent 14:57-60 (emphasis added). In essence, CIVIX contends that the "a request" equals "one or more requests, " and that the subsequent reference to "the request" also refers to the "one or more requests." According to CIVIX, therefore, the user-selected category and geographic vicinity need not appear in the same request, but can appear in multiple requests. By contrast, CoStar/LoopNet assert that the reference to "the request" means only a single request with both the category and geographic vicinity included.
The parties, consistent with the construction by the court in the Microsoft Litigation and the stipulations in the Hotels.com Litigation, have stipulated that the term "request signal representative of a selected category and geographic vicinity" in the 622 Patent must refer to "a single electronic representation of a user's selection of at least one category and at least one geographic vicinity." (Dkt. No. 157.) CoStar/LoopNet contend that the court should construe the term "request" the same way as the term "request signal, " even though the two terms are distinct. For the court to accept without further analysis that "request" and "request signal" mean the same would ignore the "general presumption that different terms have different meanings." Chi. Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012) (citation omitted). That presumption may be overcome, of course, in the face of "evidence to the contrary." Id. (citation and quotation marks omitted). The court must therefore ...